10/22: Patent Prosecution-Whither Eligibility

Topic:

Whither Eligibility, The One True Specification; Prosecution Tips Before the USPTO

Moderator:

Gauri M. Dhavan, Zoll Medical Corp., Chelmsford, MA 

Speakers:

Whither Eligibility? An Update on the Latest News on Cases, USPTO Initiatives and Legislative Efforts -- Michael S. Borella, McDonnell Boehnen Hulbert & Berghoff, LLP, Chicago, IL

The One True Specification: A Doable Thing or an Illusory Goal? The EU, China and Japan Give Their Thoughts -- Suzannah Sundby, Canady + Lortz, Washington, DC

Prosecution Tips and Tricks: Emerging techniques for efficient results and added value. -- Jameson Ma, Bookoff McAndrews, Washington, DC

Speakers

• Ma, Jameson

  Bookoff McAndrews PLLC | Partner

  Jameson helps startups and Fortune 100 companies alike develop intellectual property to protect their market share. Jameson also help his clients mitigate risk by analyzing competitor IP, and challenging competitor patents via post-grant proceedings at the USPTO.
• Sundby, Suzannah K.

  Managing Partner | Canady + Lortz LLP

  Suzannah practices all aspects of intellectual property law across diverse technologies including biochemistry, molecular biology, pharmaceuticals, microfluidics, diagnostics, medical devices, and nanotechnology. Her legal practice involves patent preparation and prosecution, licensing, opinion work, post-grant proceedings, strategic planning, and client counseling. Ms. Sundby has experience assisting start-up biotech companies with the preparation and prosecution of their foundation patents, nondisclosure agreements, and related IP issues.
• Borella, Ph.D., Michael S.

  McDonnell Boehnen Hulbert & Berghoff LLP | Co-Chair of MBHB’s Artificial Intelligence Practice Group

  Michael S. Borella is Co-Chair of MBHB’s Artificial Intelligence Practice Group and Software and Computing Practice Group. Dr. Borella leverages his knowledge of complex software to help his clients – from individual inventors and global technology companies – solve intellectual property challenges and build and manage patent portfolios. Dr. Borella is a named inventor on more than 70 U.S. patent applications and has drafted or been involved in the prosecution of hundreds of patents in the U.S. and around the world. Clients also seek Dr. Borella’s counsel on patent eligibility, validity, infringement, patentability analyses and litigation matters.
• Dhavan, Gauri

  ZOLL Medical Corporation | Chief Intellectual Property Officer

  Gauri Dhavan, Ph.D., J.D., is VP, Chief Intellectual Property Counsel at ZOLL Medical Corporation, a company that develops and markets medical devices and software solutions in the resuscitation and acute critical care field. At ZOLL, Gauri leads a team of intellectual property counsel in managing all aspects of intellectual property, including patent prosecution and portfolio management, intellectual property litigation, risk mitigation, M&A due diligence, trademarks, copyrights, trade secrets and data security. Prior to joining ZOLL, she was a patent litigator at the law firms of Fish & Richardson and Goodwin Proctor.